Ex parte BEATTY

Board of Patent Appeals and Interferences

Feb 4, 1998

08147907 (B.P.A.I. Feb. 4, 1998)

Application for patent filed November 3, 1993. 1
According to appellant, this application is a continuation of
Application 07/969,557 filed October 30, 1992, which is a
continuation of Application 07/750,955 filed August 28, 1991,
both abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KRISTINA M. BEATTY
____________
Appeal No. 95-2990
Application 08/147,9071
____________
ON BRIEF
____________
Before and THOMAS, HAIRSTON and CARMICHAEL, Administrative
Patent Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2990
Application 08/147,907
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This is an appeal from the final rejection of Claims
22-25, which constitute all the claims remaining in the
application.
Claim 25 reads as follows:
25. A method for playing musical notes utilizing a
plurality of hand bells, each said hand bell being marked by a
color corresponding to the particular musical note produced by
said hand bell, and a plurality of means for displaying only a
single combination of said colors corresponding to a single
musical note or a single musical chord, said plurality of
means for displaying comprising a deck of cards, each said
card having a front side and a back side and wherein at least
one said color is displayed on said front side; said method
comprising the steps of:
a. displaying said front side of a first said card
from said deck for a first period of time while not displaying
any other said card in said deck during said first period of
time;
b. activating each said hand bell having a color
corresponding to said combination of said colors displayed on
said first card and playing said note during said first period
of time;
c. ceasing to display said first card immediately
after said first period of time lapses;
d. ceasing to activate each said hand bell having a
color corresponding to said combination of said colors
displayed on said first card immediately after said first card
ceases to be displayed;
e. displaying said front side of a second said card
from said deck for a second period of time while not
displaying any other said card in said deck during said second
period of time;
Appeal No. 95-2990
Application 08/147,907
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f. activating each said hand bell having a color
corresponding to said combination of said colors displayed on
said second card and playing said note during said second
period of time;
g. ceasing to display said second card immediately
after said second period of time lapses; and
h. ceasing to activate each said hand bell having a
color corresponding to said combination of said colors
displayed on said second card immediately after said second
card ceases to be displayed.
The Examiner’s Answer cites the following prior art:
Chute 3,027,794 Apr. 3,
1962
Sasaki et al. (Sasaki) 4,213,372 Jul. 22,
1980 Searing 4,819,539 Apr.
11, 1989
OPINION
Claim 25
Claim 25 involves a method for playing a sequence of
musical notes on hand bells by displaying a sequence of cards
color-coded to match colors on the hand bells. Claim 25
stands rejected under 35 U.S.C. § 103 as being unpatentable
over Searing in view of either Chute or admitted prior art.
Searing discloses a method of teaching a student to
play a musical instrument. A teacher holds up a sequence of
cards such as those shown in Figure 3. Each card is shown
Appeal No. 95-2990
Application 08/147,907
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having a symbol corresponding to a musical note. A student
plays on a musical instrument the note represented by the
displayed card. Column 8, lines 50-61. In effect, a sequence
of cards is used as the written score.
Chute teaches that a written score should have each
note indicated by a different color so that a student can
easily learn to play color-coded hand bells. Column 2, line
72 through column 3, line 4.
The admitted prior art teaches a method similar to
Chute in which a teacher points to the colored notes on a
large chart and the students play the color-coded bells
corresponding to the colored notes. Specification at 2, lines
12-18.
According to the examiner, one of ordinary skill in
the art was motivated to use colors instead of symbols on
Searing’s cards in order to easily play bells as suggested by
Chute. Examiner’s Answer at 5. Appellants argue that
Searing’s method is only applicable after basic scale
instruction has been completed, which is not in accordance
with the limitations required in Claim 25. Appeal Brief at 8.
We agree with the examiner.
Appeal No. 95-2990
Application 08/147,907
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The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992). In the present case, the prior art suggests the
desirability of the modification.
Chute suggests using color-coded bells for playing a
sequence of notes because such bells are easy to play and
easily adapted. Column 1, lines 17-42. Thus, the prior art
as a whole suggested using color-coded bells as the “other
musical instrument” contemplated by Searing’s card method.
Searing at column 8, lines 50-61. Replacing Searing’s symbols
with colors that match color-coded bells as suggested by Chute
or the admitted prior art results in the subject matter of
Claim 25.
The affidavits of Carlington and Winston do not tip
the balance in favor of patentability. Winston speaks of
dramatic results but does not say whether they were
unexpected. Carlington says that the claimed teaching system
is not commercially available and that she would buy it if it
Appeal No. 95-2990
Application 08/147,907
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were. However, there is no evidence of a long felt need in
the market.
Thus, the rejection of Claim 25 will be sustained.
Claims 22 and 23
Claims 22 and 23 cover a music teaching system in
which at least one card has a plurality of colors on its face.
These claims stand rejected under 35 U.S.C. § 103 as being
unpatentable over Searing in view of either Chute or admitted
prior art.
According to the examiner, the ordinary artisan
would have been motivated to modify Searing by including more
than one color indicia on a single card for the purpose of
producing more than one note. Examiner’s Answer at 5.
Appellants argue that Searing teaches away from multiple
indicia. Appeal Brief at 9. We agree with appellants.
Searing teaches that multiple notes correspond to
multiple cards each with a single indicium, not to a single
card with multiple indicia. Column 8, lines 57-61. The
examiner has identified nothing in the cited art suggesting
the opposite approach as claimed.
Appeal No. 95-2990
Application 08/147,907
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Therefore, we will not sustain the rejection of
Claims 22 and 23.
Claim 24
Claim 24 covers a music teaching system in which a
computer screen displays a sequence of colors that match
color-coded handbells. The claim stands rejected under 35
U.S.C. § 103 as being unpatentable over Sasaki in view of
either Chute or admitted prior art.
According to the examiner, it should be readily
apparent to one skilled in the art that Sasaki can be adapted
to be used with hand bells. Examiner’s Answer at 6.
Appellants argue that Sasaki’s apparatus plays the note
displayed and does not teach displaying an indicium to elicit
a note from an instrument player. Appeal Brief at 15. The
examiner responds by pointing to Sasaki’s Background section.
Examiner’s Answer at 10. We agree with appellants.
Sasaki’s Background describes a prior method for
learning music in which a music tune was reproduced using
musical instruments. Sasaki says that such methods had
difficulties that are overcome by Sasaki’s method in which the
music is reproduced not by instruments but by a computer. The
Appeal No. 95-2990
Application 08/147,907
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computer displays in staff notation the music being played by
the computer.
We disagree with the examiner’s finding that Sasaki
suggests displaying an indicium on a computer screen to elicit
a note from an instrument player. Because that finding is at
the heart of the rejection and the other references do not
overcome the deficiency, we will not sustain the rejection of
claim 24.
CONCLUSION
The rejection of claim 25 is sustained. The
rejection of claims 22-24 is not sustained.
Appeal No. 95-2990
Application 08/147,907
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge
)
Appeal No. 95-2990
Application 08/147,907
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Robert C. Tucker
P.O. Box 15928
Baton Rouge, LA 70895